Utusan Melayu (M) Bhd v Lim Guan Eng, 14-08-2015

• Judge: Dr. Badariah Sahamid
• Judgment Date: 14 August 2015
• Court: Court of Appeal (Malaysia)
• Appellant: UTUSAN MELAYU (M) BHD
• Record Number: P 02-1729-07/2012
• Respondent: LIM GUAN ENG

IN THE HIGH COURT OF MALAYA IN KUALA LUMPUR

(COMMERCIAL DIVISION)

CIVIL SUIT NO: 22IP-24-05/2015

BETWEEN

PORTCULLIS TRUSTNET (SINGAPORE) PTE. LTD.

(Co No. 198900404M) … PLAINTIFF

AND

1. GEORGE PATHMANATHAN A/L MICHAEL GANDHI NATHAN

(NRIC NO. 610925-10-6543)

2. PORTCULLIS HOLDINGS (MALAYSIA) SDN BHD

(Co No. 321463-K)

3. PORTCULLIS TRUST (MALAYSIA) SDN BHD

(Co No. 211538-H)

4. PORTCULLIS TRUSTNET (MALAYSIA) SDN BHD

(Co No. 441223-P)

5. PORTCULLIS NOMINEES (MALAYSIA) SDN BHD

(Co. No. 211539-T)

6. PORTCULLIS TRUSTNET (LABUAN) LIMITED

(Co. No. LL03699)

7. GURKER SDN BHD (Co. No. 399363-M)

8. SHERPER SDN BHD (Co. No. 441531-P)

9. PORTCULLIS FUND ADMINISTRATION (LABUAN) LTD

(Co. No. LL05781)

10. CORPDIRECT LTD (Co. No. LL05112)

11. CORPSEC LTD (Co. No. LL05118)

12. CORPSHARE LTD (Co. No. LL05119) … DEFENDANTS

JUDGMENT

(After trial)

A. Introduction

1. This is another dispute in the long running saga between two senior lawyers, Mr. David Chong Kok Kong (Mr. Chong) and first defendant (1^st Defendant).

2. This case concerns the following subject matter:

(1) 12 trade marks registered in the name of plaintiff company (Plaintiff) with Registrar of Trade Marks (Registrar) in Classes 35, 41 and 45 (12 Registered Trade Marks);

(2) 4 trade marks (Portcullis Trade Marks) whereby applications to register Portcullis Trade Marks in Class 36 by Plaintiff are pending before the Registrar (Plaintiff’s 4 Trade Mark Applications). The Portcullis Trade Marks are –

(a) “PORTCULLIS TRUSTNET”,

(b) “PORTCULLIS”,

(c) a logo (Portcullis Logo). Portcullis Logo is annexed to this judgment as Annexure A; and

(d) (Portcullis TrustNet in Chinese characters);

(3) 2 applications had been filed by 1^st Defendant to register Portcullis Logo and “PORTCULLIS TRUSTNET” (1^st Defendant’s 2 Trade Mark Applications). The 1^st Defendant’s 2 Trade Mark Applications are still pending before Registrar; and

(4) 6 domain names (Portcullis Domain Names).

B. Issues

3. The issues that arise in this case are, among others:

(1) whether Plaintiff must comply with s 66(1)(a) and (b) of the Trade Marks Act 1976 (TMA) before Plaintiff can admit the following evidence -

(a) trade marks registered by Plaintiff in countries outside Malaysia; and

(b) Plaintiff’s applications to register trade mark in a foreign country.

In this regard, does s 66(1) TMA exclude the application of ss 74(a)(iii) and 78(1)(f) of the Evidence Act 1950 (EA) on admissibility of “public documents”;

(2) whether Plaintiff can tender as evidence documents regarding creation of Portcullis Logo (Portcullis Logo Documents) –

(a) when Mr. Chong is one of the co-makers of certain drawings; and

(b) whether Portcullis Logo Documents can be admitted as “real evidence” under s 60(3) EA and/or s 32(1)(b) EA;

(3) whether defendants (Defendants) can rely on certain findings made in the following proceedings -

(a) arbitral proceedings commenced by Portcullis International Ltd. (Portcullis International) against 1^st Defendant (Arbitral Proceedings); and/or

(b) Kuala Lumpur High Court Originating Petition No. D3-36-50/2006 (Oppression Suit) filed by 1^st Defendant against Portcullis International, Mr. Chong and Portcullis Holdings (M) Sdn. Bhd. (2^nd Defendant)

- to estop Plaintiff in this case by reason of 2 limbs of res judicata doctrine, namely cause of action estoppel and issue estoppel;

(4) whether there were certain admissions made by Mr. Chong in Arbitral Proceedings and/or Oppression Suit which bound Plaintiff in this case. This question discusses, among others, ss 17(1), 31, 57(1), 80 and 115 EA as well as O 38 r 12 of the Rules of Court 2012 (RC);

(5) whether Defendants can rely on Memorandum of Agreement dated 2.4.1998 between Portcullis International and 1^st Defendant (MOA) in this case;

(6) who is first user and Common Law owner of Portcullis Trade Marks?;

(7) whether Defendants can apply to Court to expunge 12 Registered Trade Marks under s 45(1)(a) TMA;

(8) whether 1^st Defendant’s 2 Trade Mark Applications have been lawfully made under s 25(1) TMA and if not, can 1^st Defendant be compelled by a mandatory injunction to withdraw 1^st Defendant’s 2 Trade Mark Applications?;

(9) whether Defendants have infringed 12 Registered Trade Marks. If there is no evidence of trade mark infringement, can the Court grant a perpetual quia timet injunction under s 52(3)(e) of the Specific Relief Act 1950 (SRA) to restrain a future infringement of the registered trade mark;

(10) whether Defendants have committed tort of passing off in this case;

(11) whether copyright subsisting in Portcullis Logo was –

(a) first owned by Portcullis Investment Pte. Ltd. (Portcullis Investment);

(b) subsequently distributed to Mr. Chong and his wife (Mrs. Chong) upon Portcullis Investment’s voluntary winding up; and

(c) finally assigned by Mr. and Mrs. Chong to Plaintiff.

In this respect –

(i) can the Court accept Mr. Chong’s evidence on the applicable law of Singapore; and

(ii) if there is no expert evidence on the applicable law of Singapore, is the assignment valid under s 27(1) and (3) of Copyright Act 1987 (CA);

(12) whether there has been an infringement of copyright in Portcullis Logo; and

(13) whether Plaintiff had committed tort of unlawful interference with Defendants’ trade.

C. Plaintiff’s case

4. The Amended Statement of Claim (ASOC) alleged the following 3 causes of action against Defendants:

(1) infringement of 12 Registered Trade Marks;

(2) copyright infringement of Portcullis Logo; and

(3) commission of tort of passing off regarding Portcullis Trade Marks and/or Portcullis Domain names.

5. The Plaintiff called the following 3 witnesses to testify in this case:

(1) Mr. Chong;

(2) Mr. Kum Shin Jow (Mr. Kum); and

(3) Mr. Foo Chee Thong (Mr. Foo).

6. Mr. Chong’s 2 witness statements stated as follows, among others:

(1) Mr. Chong is -

(a) the President, founder and owner of Portcullis group of companies (Portcullis Group);

(b) a director of Plaintiff;

(c) a director of David Chong Law Corporation in Singapore (DCS) (formerly known as Messrs David Chong & Co);

(d) founder of the Malaysian law firm, Messrs David Chong & Co (DCM) in Kuala Lumpur [DCM(KL)] and then in Johore Bahru. Mr. Chong then opened a DCM branch in Labuan [DCM (Labuan)] in or around July 1993; and

(e) a partner of Messrs David Chong & Partners, a law firm in Labuan;

(2) Plaintiff is incorporated in Singapore on 31.1.1989 with the name of Portcullis Services Pte. Ltd. The Plaintiff changed its name 3 times until its present name as stated in this suit;

(3) concerning Portcullis Group –

(a) the first company is Portcullis Investment which is incorporated in Singapore on 19.1.1987;

(b) the first Malaysian companies in Portcullis Group are third defendant company (3^rd Defendant) and fifth defendant company (5^th Defendant) which are incorporated on 22.01.1991;

(c) Portcullis Group is in the business of providing company secretarial and administration services, trustee services, foundation and fund administration services, business consultancy and advisory services, as well as other services registered in respect of 12 Registered Trade Marks and applied for in the Plaintiff’s 4 Trade Mark Applications (Services);

(d) the Services were first provided by Plaintiff either directly to Malaysian clients or indirectly by instructing DCS and/or DCM. 3^rd and 5^th Defendants were established with the aim of using these companies eventually to provide the Services directly to clients in Malaysia. All the business in the initial years undertaken by DCM and later, the 3^rd and 5^th Defendants, were referrals from the Plaintiff or DCS;

(e) at the beginning, 3^rd and 5^th Defendants were dormant and did not provide Services in Malaysia. The Portcullis’ business in Malaysia was still conducted through Plaintiff, DCM and/or DCS. The 3^rd Defendant received some revenue but only through rental of premises in Wisma MCA in Kuala Lumpur to DCM(KL) between the years 1991 to 1993. The 5^th Defendant remained dormant until at the very earliest, 12.10.1994;

(f) 2^nd Defendant was incorporated in 1994, and following a restructuring in late 1997, became the holding company for Portcullis companies in Malaysia (Malaysian Portcullis Companies). As the business in Malaysia grew, additional Malaysian Portcullis Companies are as follows -

(i) fourth defendant company (4^th Defendant) is incorporated on 4.8.1997;

(ii) the nature of 5^th Defendant’s business is to provide nominee shareholder services relating to company incorporation, registration and structuring of business organisation as part of company secretarial services provided by 4^th Defendant;

(iii) sixth defendant company (6^th Defendant) is incorporated on 11.04.2003. 6^th Defendant’s business includes company secretarial services and incorporation and administration of Labuan companies, tax preparation, preparation of documents relating to taxation, book keeping and accounting services generally. 3^rd Defendant’s business was transferred to 6^th Defendant pursuant to a vesting order dated 12.02.2014 made by Kuala Lumpur High Court;

(iv) seventh defendant company (7^th Defendant) is incorporated on 22.8.1996. 7^th Defendant is in the...